Betsson Malta Ltd. v. LY CORP, Ciari Lianne

Case No. D2011-1657

1. The Parties

The Respondent is LY CORP, Ciari Lianne of Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <betsson909giris.com> is registered with Spot Domain LLC dba Domainsite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On the same date, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the disputed domain name. On September 30, 2011, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2011.

The Center appointed Luca Barbero as the sole panelist in this matter on November 24, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Betsson Group was founded in 1963 and consists of the Swedish company Betsson AB and of the Complainant, Betsson Malta Ltd, a 100% owned subsidiary which conducts the gaming operations.

The Complainant specializes in online gambling products and games and is active in 20 markets around the world, with more than 2.5 million registered users.

The Complainant is the owner of several trademark registrations for BETSSON, including the Community Trademark Registrations Nos. 006517056 for BETSSON (word mark), filed on December 19, 2007, in Classes 36, 38 and 41 of the Nice Classification and registered on September 30, 2008; and 006515902 for BETSSON (figurative mark), filed on December 19, 2007, in Classes 36, 38 and 41 of the Nice Classification and registered on September 30, 2008; and the International Trademark Registrations Nos. 962854 for BETSSON (word mark), registered on December 19, 2007, in Classes 36, 38 and 41 of the Nice Classification; and 972654 for BETSSON (figurative mark), registered on December 19, 2007, in Classes 36, 38 and 41 of the Nice Classification.

The Complainant operates the web site “www.betsson.com” and is the owner of several domain names comprising the trademark BETSSON in many countries, including, inter alia, <betsson.net>, <betsson.mobi>, <betsson.eu>, <betsson.ca>, <betsson.hk>, <betsson.asia> and <betsson.tw>.

The disputed domain name was registered on December 4, 2010 with the use of a privacy service, which was disabled after a cease and desist letter sent by the Complainant’s representative.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark in which it has rights, as it reproduces the trademark BETSSON in its entirety, with the mere addition of the number “909” and of the generic term “giris”, which is the Turkish for “introduction” and a commonly used word within betting and gaming communities in Turkey.

With reference to right or legitimate interests in the disputed domain name, the Complainant states that the Respondent has no rights or legitimate interests in the trademark BETSSON and that the Respondent has not been granted any licence or permission to register the trademark BETSSON as part of the disputed domain name.

The Complainant also states that the Respondent is not commonly known by the disputed domain name since BETSSON is not a personal name or a name of any service or product range provided by the Respondent.

The Complainant highlights that the Respondent had apparently knowledge of the Complainant’s trademark and business since the web site corresponding to the disputed domain name mentioned “Betsson Casino Maxi”, a service provided by the Complainant, and displayed a link “Betsson909”, which can be referred to a domain name operated and owned by the Complainant’s web site “www.betsson909.com”. The Complainant also underlines that there was no disclaimer of association with the trademark owner on the web site corresponding to the disputed domain name.

The Complainant concludes that the Respondent has been attempting to attract Internet users to its web site by creating a likelihood of confusion and suggesting a sponsorship or endorsement of the web site by the Complainant.

The Complainant also states that, at the time of the drafting of the Complaint, the web site has been deactivated.

With reference to the bad faith requirement, the Complainant states that, in light of the registration of the disputed domain name confusingly similar to the trademark BETSSON and of the references made to the Complainant’s products and services on the corresponding web site, the Respondent was well aware of the Complainant’s trademark and business and, indeed, registered the disputed domain name with the Complainant’s trademark in mind in order to gain from that initial confusion of the Internet user or to prevent the the Complainant from using it.

The Complainant also states that the Respondent’s knowledge of the BETSSON traedmark is higlighted by the use of the names of the Complainant’s services and products on blogs published on the Blogspot web site by the Respondent.

As an additional circumstance evidencing bad faith, the Respondent points out that the Respondent has conceiled its identity by using a privacy whois service and also by communicating to the concerned Registrar false contact information.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for BETSSON, including the International Trademark Registration No. 962854 for BETSSON (word mark), registered on December 19, 2007, in Classes 36, 38 and 41 and the International Trademark Registration No. 962854 for BETSSON (word mark), registered on December 19, 2007, in Classes 36, 38 and 41.

The Panel finds that the disputed domain name is confusingly similar to the trademark owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of generic or descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the number “909” and of the generic term “giris” (which is the Turkish for “introduction”) does not exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademark.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish right or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. Moreover, the Respondent has not provided evidence of any use or preparations to use of the disputed domain name in connection with a bona fide offering of goods or services.

Furthermore, there is no indication before the Panel that the Respondent, whose true identity has been concealed through the use of a privacy service and the indication of apparently false contact information, has not shown that it is commonly known by the disputed domain name.

The Panel notes that the disputed domain name has been directed in the past to a web site displaying some information apparently related to the Complainant and its products and services. At the time of the drafting of the Decision, the disputed domain name is not pointed to any active web site, i.e. is passively held.

In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,
WIPO Case No. D2006-0483, where the Panel found that “Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute “legitimate non-commercial or fair use””. See Euromarket Designs, Inc. v. Domain For Sale VMI,
WIPO Case No. D2000-1195 (October 26, 2000) (noting that respondent was a passive holder of the Domain Name <crateandbarrel.org> in that “the Domain Name does not resolve to a site” and ruling that, “[g]iven that the Domain Name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the Domain Name); Netcentives, Inc. v. B W Brody Co.,
WIPO Case No. D2000-0672 (September 29, 2000) (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the Domain Name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark)”.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name constituted confusingly similar to the trademark BETSSON cannot be ascribed to a mere coincidence. The fact that the disputed domain name was pointed by the Respondent to a web site displaying contents related to the Complainant’s products and services shows, in the Panel’s view, that the Respondent was indeed aware of the Complainant’s trademark at the time of registration.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,
WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,
WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,
WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,
WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,
WIPO Case No. D2005-0868 “[...] it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel notes that the disputed domain name, which was previously pointed to a web site displaying some information about BETSSON products and services, is now passively held. As established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. See the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.

Furthermore, the Panel notes that the Complainant’s use of a privacy service in combination with provision of incomplete or false contact information to such service constitutes evidence of bad faith. See, inter alia, Steelcase Development Corporation v. Admin, Domain,
WIPO Case No. D2005-1352, stating that the use of false contact information by the Respondent is indication of bad faith (Wachovia Corporation v. Peter Carrington,
WIPO Case No. D2002-0775), and Sud-Chemie AG v. tonsil.com,
WIPO Case No. D2000-0376, finding bad faith use and registration where Complainant "was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar’s registry".

The Panel also finds that the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <betsson909giris.com>, be transferred to the Complainant.